Wizards of the Coast, Inc. v. John
Zuccarini
Claim Number: FA0203000106106
Complainant
is Wizards of the Coast, Inc.,
Renton, WA (“Complainant”) represented by Brian
E. Lewis. Respondent is John
Zuccarini, Nassau, BAHAMAS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <magicthegathring.com>,
registered with Joker.com.
PANEL
On April 24, 2002 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed James P. Buchele as Panelist. The undersigned certifies that he has
acted independently and impartially and to the best of his knowledge, has no
known conflict in serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 26, 2002; the Forum received a hard copy of the
Complaint on March 26, 2002.
On
March 27, 2002, Joker.com confirmed by e-mail to the Forum that the domain name
<magicthegathring.com> is
registered with Joker.com and that Respondent is the current registrant of the
name. Joker.com has verified that
Respondent is bound by the Joker.com registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
March 27, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 16,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@magicthegathring.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Respondent registered a domain name <magicthegathring.com>
that is virtually identical and confusingly similar to Complainant’s
registered mark MAGIC: THE GATHERING.
2.
Because Internet users are redirected to an adult website comprised of
advertisement links to other pornographic websites, and since Respondent is not
commonly known as <magicthegathring.com>, Respondent has no rights or legitimate
interests in the disputed domain name.
3. Respondent has prevented Complainant from
reflecting its mark in the corresponding domain name. Furthermore, Respondent has engaged in a pattern of such
conduct. Finally, Respondent has
intentionally attempted to attract Internet users, for commercial gain, to a
pornographic advertisement website by creating a likelihood of confusion with
Complainant’s registered mark as to the source, sponsorship, affiliation, or
endorsement of the pornographic website connected with the disputed domain
name. Therefore Respondent has registered and used the
disputed domain name in bad faith.
B.
Respondent
No
Response was submitted.
FINDINGS
Complainant uses MAGIC: THE GATHERING® in
conjunction with a fantasy-based trading card game. Complainant registered the mark with the United States Patent and
Trademark Office on September 19, 1995 (Reg. No. 1,919,923), and is the owner
of 63 trademark registrations worldwide.
As a result of Complainant’s strenuous efforts promoting its product,
the game associated with the mark is currently available in nine languages and
played by over six million people in fifty-two countries worldwide. Additionally, there are over 100,000
official MAGIC: THE GATHERING tournaments held annually throughout the world,
and sales of the trading card game have averaged in excess of $100 million per year
since 1996.
Complainant’s target market is 12-18
year-old males. Research conducted
shows that 95% of this MAGIC: THE GATHERING target audience has regular
Internet access.
Respondent registered the disputed domain
name July 25, 2000. Respondent uses the
disputed domain name by linking it to a website that offers links to
pornographic goods and services.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established its rights to
the MAGIC: THE GATHERING mark. The
disputed domain name is confusingly similar to Complainant’s famous mark.
First, even though the disputed domain
name does not incorporate Complainant’s mark spaces, the domain name does not
distinguish itself from the mark. See
Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum
Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE,
“as spaces are impermissible in domain names and a generic top-level domain
such as ‘.com’ or ‘.net’ is required in domain names”); see also Planned Parenthood Fed’n of Am. v. Bucci,
42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997) aff’d 152 F3d 920 (2nd Cir. 1998) cert.
denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and
defendant’s <plannedparenthood.com> domain name nearly identical).
Second, the fact that the domain name in
dispute does not incorporate the colon from Complainant’s mark does not defeat
the confusing similarity between the disputed domain name and mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb.
Forum Apr. 24, 2000) (finding that punctuation is not significant in
determining the similarity of a domain name and mark); see also Adamovske Strojirny v. Tatu Rautiainen,
D2000-1394 (WIPO Dec. 20, 2000) (finding confusing similarity between the
<adast.com> domain name and Complainant’s three different marks,
consisting of a combination of a symbol with the words “ADAST”, “ADAST
dominant” and “ADAST maxima”).
Accordingly, the Panel finds that <magicthegathring.com> and MAGIC: THE GATHERING are confusingly
similar and therefore, Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Since a Response was not filed, the Panel
will presume that all allegations in the Complaint are true. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”).
Respondent uses a misspelling of
Complainant’s famous mark to divert Internet users to a website that offers
pornographic advertisements. Such
activity is not considered a bona fide offering of goods and services pursuant
to Policy ¶ 4(c)(i). Nor is a
misspelling of a famous mark considered a legitimate, noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See MatchNet plc v. MAC Trading, D2000-0205
(WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or
services to use a domain name for commercial gain by attracting Internet users
to third party sites offering sexually explicit and pornographic material, where
such use is calculated to mislead consumers and tarnish the Complainant’s
mark); see also Encyclopaedia Brittanica,
Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use
does not apply where the domain names are misspellings of Complainant's mark).
Complainant is known as “John Zuccarini” and
according to the Complaint, Respondent has been known as “Cupcake Party,”
“Cupcake Patrol,” “Cupcake City,” “Cupcake Show,” “Cupcake Parade,” “Cupcake
Confidential,” “Cupcake Messenger,” “Cupcake Real Video,” “The Cupcake
Incident,” “The Cupcake Secret,” “The Country Walk,” “JZ Design,” and “RaveClub
Berlin.” However, Respondent has not
been commonly known as <magicthegathring.com>, and since Respondent has not presented any
evidence to the contrary, Respondent has failed to satisfy Policy ¶
4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because Respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use).
Consequently, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
By using a confusingly similar domain
name that differs from the famous mark by merely omitting the letter “e,”
Respondent has engaged in “typosquatting.”
It has consistently been held that the practice of “typosquatting” is
recognized as a bad faith use of a domain name. See e.g. Hewlett-Packard Co.
v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding
<hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see
also Bama Rags, Inc. v. Zuccarini,
FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com>
and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to
Complainant).
Respondent has prevented Complainant from
reflecting its mark in the corresponding domain name. Respondent has history of engaging in similar conduct. See Encyclopaedia Britannica, Inc. v. Zuccarini & Cupcake Patrol,
D2000-0330 (WIPO June 7, 2000) (finding “ample evidence” of bad faith
registration and use and thus transferring <encyclopediabrittanica.com>,
<brtanica.com>, <bitannica.com>, and <"britannca.com>
from Respondent to Complainant); see also Knight-Ridder, Inc. v. Cupcake Patrol, FA 96551 (Nat. Arb. Forum
Mar. 6, 2001) (finding that Respondent registered and is used <miamihearld.com>
in bad faith); see also Hewlett-Packard
Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that
Respondent used the domain name in bad faith as part of a pattern of conduct
involving multiple registrations of undeveloped domain names and therefore,
transferring <hewlittpackard.com> from Respondent to Complainant); see
also FAO Schwarz v. Zuccarini, FA
95828 (Nat. Arb. Forum Dec. 1, 2000) (finding that Respondent registered and
used <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>,
and <faoswartz.com> in bad faith).
Therefore, Respondent has registered <magicthegathring.com>
in bad faith pursuant to Policy ¶ 4(b)(ii).
See L.L. Bean, Inc. v.
Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that
Respondent acted in bad faith by establishing a pattern of registering
misspellings of famous trademarks and names).
Respondent has linked a confusingly
similar domain name to a website that offers pornographic goods and
services. Such use is considered to be
in bad faith pursuant to Policy ¶ 4(b)(iv).
See Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under
Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar
to the Complainant’s mark and used a confusingly similar pornographic depiction
of the Complainant’s registered trademark on its web site to cause confusion as
to the source or affiliation of the site); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain
name in question to websites displaying banner advertisements and pornographic
material).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby granted.
Accordingly, it is Ordered that the <magicthegathring.com> domain
name be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated May 8, 2002
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